The IPKat

Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. Read, post comments and participate!

Investing for a new trade mark? What do I do with my slogan?

In
yesterday's judgments in Cases T-59/14‘INVESTING
FOR A NEW WORLD’ and T-609/13 ‘SO
WHAT DO I DO WITH MY MONEY’ the General Court of the European Union reviewed
the EU case-law on slogan marks, rejecting the appeal of the US-based
corporation Blackrock Inc., on the basis that its Community trade mark (CTM)
applications were devoid of distinctive character according to Article 7(1)(b)
of Regulation
207/2009.

Possibly
influenced by the US approach relating to trade marks serving both as
source-identifier and for functional purposes, Blackrock applied in 2012 for
‘INVESTING FOR A NEW WORLD’ and ‘SO WHAT DO I DO WITH MY MONEY’ for several
financial services in classes 35 and 36. In both cases the examiner found that
the CTM applications lacked distinctiveness. The First and Fourth Boards of
Appeal respectively dismissed Blackrock's appeals: in their view, both marks
consisted of straightforward expressions whose meanings could be clearly
understood by the relevant public as they were in close connection with
investment/financial services for which protection was sought. Therefore both
signs could not be perceived by the relevant public as origin identifiers but
solely promotional sentences.

All that Vorsprung durchTechnik -- but still Grumpy

In regard to the relevant public, although in
both cases the English-speaking average consumers and professionals were taken
into account, in the ‘INVESTING FOR A NEW WORLD’ decision the Board of Appeal
stated that the level of attention was ‘relatively high’ given the nature of
financial services, while in the ‘SO WHAT DO I DO WITH MY MONEY’ the Board took
the view that with reference to promotional formulas the level of attention was
‘relatively low’.

In its
appeals to the General Court, Blackrock supported an identical single plea in
law that there had been a wrong assessment of its marks’ distinctiveness and a
misapplication of the judgment in the Court of Justice of the European Union
(CJEU) ruling in VORSPRUNG DURCH TECHNIK (Audi v OHIM, Case
C-398/08 P, ECR, EU:C:2010:29), on which it had extensively relied in
the OHIM proceedings.

The Court
sketched out some preliminary remarks common to both judgments. It recited the
settled case-law affirming that a mark has distinctive character if it serves
as a source of commercial origin and that distinctiveness must be assessed by
reference to the relevant goods and services and to the perception of the
relevant public. The Court specified that those two criteria also apply to
signs which are slogans for which trade mark protection is sought: such
protection is not barred solely because of the advertising use of the signs. In
truth, though, for slogan marks the public’s perception is not the same as for
other types of marks and, therefore, assessing their distinctiveness results
more difficult.

In the
light of Audi v OHIM the General Court addressed some typical
issues affecting slogan marks. Thus a slogan does not necessarily imply
‘imaginativeness’ or ‘conceptual tension’ directed at providing a striking
impression in order to be distinctive; if a mark is perceived as a promotional
formula or because of its laudatory meaning it can be used by more than one
undertaking it will not sufficiently follow that such mark lack
distinctiveness; a slogan mark can simultaneously be inherently distinctive and
functionally descriptive for advertising purposes.

Let's now
take a look at the specifics of each of Blackrock's appeals:

Case
T-609/13 ‘SO WHAT DO I DO WITH MY MONEY’

Provided
that the low level of attention of the relevant public had been already
established by the Board of Appeal, the Court considered that SO WHAT DO I DO
WITH MY MONEY could be easily understood, in that it comprised English words
related to the financial services covered by the CTM application and arranged
according the English grammar rules. The slogan’s clear message would induce
the relevant public to reflect on whether it was using its money effectively.
Moreover, the expression contained in the sign was laudatory and promotional of
Blackrock’s services, as it could lead to the conclusion that the applicant
could capably answer that question. The slogan had no semantic depth which
could offset the clear close link between the sign and the relevant
financial services. Contrary to what Blackrock stated, the Court did not
find any multiple meanings of the slogan, nor did Blackrock provide any. In any
event, even if the slogan had several meanings it that didn't mean that it was
distinctive. Finally, said the Court, neither its interrogative form nor the
open-ended nature of the implied question could help give it any
distinctiveness.

Did the
Board of Appeal misapply the CJEU's ruling in Audi v OHIM? No, said
the Court: Blackrock misunderstood its test for distinctiveness: since the
German slogan VORSPRUNG DURCH TECHNIK could have
different meanings beyond the literal meaning of "advance or
advantage through technology", or could constitute a play on words
or could be perceived as imaginative, it was both easy to remember
and distinctive. That was not the case for 'SO WHAT DO I DO WITH MY MONEY’.The
Court specified that the Board of Appeal did not reject the CTM application
solely because of its laudatory nature but also because it could not serve as
origin identifier. Nothing was wrong with the Board of Appeal's test of
distinctiveness: when the relevant public would think of a service provider
named 'SO WHAT DO I DO WITH MY MONEY’, while looking at the mark, it wouldn't
think it was being informed about the commercial source of the services for
which CTM registration was sought.

Case
T-59/14 ‘INVESTING FOR A NEW WORLD’

The Court
did not accept the Board of Appeal’s conclusion that the relevant public’s
level of attention was ‘relatively high’. While that public included
professionals and registration was sought for financial services, the relevant
public's attention was low when slogans are concerned.

Examining
the Board of Appeal’s assessment of the mark’s meaning, the Court pointed out
that ‘INVESTING FOR A NEW WORLD’ is a combination of common English words which
respect the rules of English grammar. It followed that the CTM application
conveyed a clear the meaning that “the services offered are intended for a
new world’s needs”, and, therefore it expressed a positive and
laudatory message with reference to the relevant services. Moreover,
a close link between the sign and the financial services covered by the CTM
application was apparent, depriving the mark of any semantic depth, word-play
or surprising or unexpected elements which could confer due distinctiveness.
Finally, in relation to the applicant’s argument that the CTM application had
multiple meanings, the Court specified that this circumstance is not decisive
to affirm its distinctiveness and that the several possible interpretations of
the mark did not change its laudatory nature. Indeed, if at least one of the
trade mark application’s possible meanings expresses the goods’ and services’
characteristics, its registration must be rejected.

Moving on
to the judgment in VORSPRUNG DURCH TECHNIK, the Court held that the Board of
Appeal had correctly rejected the CTM application because it could not be
deployed as origin identifier beyond being a promotional formula. The Board of
Appeal was also right in simply clarifying that, in Audi v OHIM the
distinctiveness of Audi’s slogan mark had been affirmed, given that the sign
was a widely known slogan, having been used for many years, and could also lead
consumers to identify the commercial origin of the advertised motor vehicles.
In contrast, such long-standing presence in the market for the Blackrock
slogan's reputation was not proved in the present case.

So what do readers think about the distinctiveness-functional
descriptiveness dichotomy for advertising purposes?

Investing for a new trade mark? What do I do with my slogan?
Reviewed by valentina torelli
on
Thursday, January 29, 2015
Rating: 5